STANDING ORDER IN PATENT CASES
1. Application of Standing Order
(a) This Standing Order applies to patent infringement,
validity and unenforceability actions and proceedings filed
in or transferred to this District except those in which a
26(f)conference was held before the effective date of this
Standing Order. The Court may modify the obligations or
deadlines set forth in this Standing Order based on the
circumstances of any particular case, including, without
limitation, the simplicity or complexity of the case as
shown by the patents, claims, technology, products, or
parties involved.
(b) The Local Civil Rules and the Standing Order on
Scheduling in Civil Cases also apply to such actions and
proceedings, except to the extent they are inconsistent with
this Standing Order.
2. Initial Scheduling Conference
When the parties confer pursuant to Fed.R.Civ.P.26(f), in
addition to the matters covered by Fed.R.Civ.P.26, the parties
must discuss and address in the report filed pursuant to Fed.
R. Civ. P. 26(f):
(a) any proposed modification of the deadlines or
proceedings set forth in this Standing Order;
(b) proposed format of and deadlines for claim
construction filings and proceedings, including a proposal
for any expert discovery the parties propose to take in
connection therewith; and
(c) proposed format of and deadlines for service of
infringement, non-infringement, invalidity a n d / o r
unenforceability contentions, including any proposed deadlines
for responses thereto or supplementation thereof.
3. Certification of Disclosures
All statements, disclosures, or charts filed or served
in accordance with this Standing Order are deemed
disclosures subject to Rule 26(g) of the Federal Rules of
Civil Procedure.
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4. Admissibility of Disclosures
Statements, disclosures or charts governed by
this Standing Order are admissible to the extent permitted
by the Federal Rules of Evidence or Civil Procedure.
However, the statements and disclosures provided for in
Paragraph 11 of this Standing Order are not admissible for
any purpose other than in connection with motions seeking
an extension or modification of the time periods within
which actions contemplated by this Standing Order shall be
taken.
5. Discovery Objections Based on Standing Order
A party may object to a mandatory disclosure under Fed.
R. Civ. P. 26(a) or to a discovery request as conflicting
with or premature under this Standing Order only if the
mandatory disclosure or discovery request would require
disclosure of (a) information of the kind dealt with by
Paragraphs 6, 7, 8, 10, 11 and 12 of this Standing Order or
(b) responses to such information. Where a party properly
objects to a discovery request or declines to provide
information in its initial disclosures, that party shall
provide the requested information by the date on which it
is required to be provided under this Standing Order, or as
otherwise required by the Court, unless there exists
another legitimate grounds for objection. Contentions
responsive to information of the kind dealt with by
Paragraphs 6, 7, 8, 10, 11 and 12, if sought, may be
provided forty-two (42) days after the date on which the
information is provided, unless otherwise required by the
Court.
6. Disclosure of Asserted Claims and Infringement Contentions
Unless otherwise specified by the Court, not later than
forty-two (42) days after the filing of the parties’ 26(f)
report, a party claiming patent infringement must serve on
all parties a ”Disclosure of Asserted Claims and
Infringement Contentions,” which identifies for each
opposing party, each claim of each patent-in-suit that is
allegedly infringed and each product or process of each
opposing party of which the party claiming infringement is
aware that allegedly infringes each identified claim.
7. Invalidity Contentions
Unless otherwise specified by the Court, not later than
forty-two (42) days after service of the ”Disclosure of
Asserted Claims and Infringement Contentions,” each party
opposing a claim of patent infringement must serve upon all
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parties its ”Invalidity Contentions,” if any. Invalidity
Contentions must identify each item of prior art that
the party contends allegedly anticipates or renders obvious
each asserted claim, and any other grounds of invalidity,
including any under 35 U.S.C. § 101 or § 112, or
unenforceability of any of the asserted claims.
8. Disclosure Requirement in Patent Cases Initiated by
Declaratory Judgment
In all cases in which a party files a pleading seeking
a declaratory judgment that a patent is not infringed, is
invalid, or is unenforceable, Paragraph 6 of this Standing
Order shall not apply with respect to such patent unless
and until a claim for patent infringement of such patent is
made by a party. If a party does not assert a claim for
patent infringement in its answer to the declaratory
judgment pleading, unless otherwise specified in the
Court’s Scheduling Order, the party seeking a declaratory
judgment must serve upon all parties its Invalidity
Contentions with respect to such patent that conform to
Paragraph 7 of this Standing Order not later than
forty-two(42) days after the filing of the parties’
26(f) report.
9. Duty to Supplement Contentions
The duty to supplement in Fed. R. Civ. P. 26(e) shall
apply to the Infringement Contentions and the Invalidity
Contentions required by Paragraphs 6 and 7 of this Standing
Order.
10. Opinion of Counsel
Not later than forty-two (42) days after entry of an
order ruling on claim construction, each party that will rely
on an opinion of counsel as part of a defense to a claim of
willful infringement or inducement of infringement, or that
a case is exceptional, must produce or make available for
inspection and copying the opinion(s) and any other documents
relating to the opinion(s) as to which attorney-client
or work product protection has been waived as a result of
such production.
11. Joint Disputed Claim Terms Chart
By a date specified by the Court, the parties shall
cooperate and jointly file a Joint Disputed Claim Terms Chart
listing the disputed claim terms and phrases, including each
party’s proposed construction, together with an identification
of all intrinsic and extrinsic evidence that supports or
opposes the construction relied upon by either party.
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12. Claim Construction Briefing
Unless otherwise specified by the Court:
(a) Not later than thirty-five (35) days after filing
of the Joint Disputed Claim Terms Chart pursuant to
Paragraph 11 of this Standing Order, the parties must serve
and file opening claim construction briefs and all
supporting evidence and testimony.
(b) Not later than thirty-five (35) days after service of
the opening claim construction briefs, the parties must serve
and file responses to the opening claim construction briefs
and any additional supporting evidence and testimony.
Confidentiality.
(a) Discovery may not be withheld on the basis
of confidentiality absent Court order. Pending entry of
a protective order, the parties shall proceed as follows:
(i) If any document, information including
electronically stored information (“ESI”), or
thing (collectively, "Material") produced is
deemed confidential by the producing party, the
Material shall be marked with the level of
confidentiality claimed (e.g. “Confidential”, “Highly
Confidential – Attorneys’ Eyes Only” or “Highly
Confidential – Outside Attorneys’ Eyes Only”), by
the disclosing party. Disclosure of the
confidential Material shall be limited to each party’s
outside attorney(s) of record and the employees of such
outside attorney(s), except as set forth in 13(b).
(ii) If a party is not represented by an outside
attorney, disclosure of the confidential Material shall
be limited to one (1) designated “in house” attorney,
whose identity and job functions shall be disclosed to
the producing party seven (7) days prior to any
such disclosure, in order to permit any motion for
protective order or other relief regarding such
disclosure.
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(b)After entry of a protective order, the limits on
disclosure provided by such order shall apply.
IT IS SO ORDERED,
/s/ Victor A. Bolden
Victor A.Bolden
United States District Judge
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